Research Administration Office

University of California

Memo Operating Guidance

No. 93-11

July 1, 1993

Subject: Ownership and Dissemination of Research Results

Enclosed are materials relating to the ownership and dissemination of research results. Additional materials on this Subject were transmitted by Contract and Grant Memos 86-32, 86-3, 85-21, and 85-16. Materials enclosed herewith are:

Memorandum dated June 1, 1993 from Special Assistant Belle Cole to Vice Chancellors for Research and Graduate Division Deans transmitting a brief statement of University policies and principles applicable to the Technology Reinvestment Project

Memorandum dated June 7, 1993 from the Association of American Universities to Presidents and Chancellors regarding Agencies Encourage Waiver of Indirect Costs and Patent Rights in the Technology Reinvestment Project

Opinion issued by the United States District Judge Harold H. Greene, United States District Court for the District of Columbia, in The Board of Trustees of the Leland Stanford Junior University v. Louis Sullivan, M.D. Secretary, Health and Human Services, et al.

Memorandum dated June 14, 1993 from University Counsel Beal transmitting a copy of an article from the Journal of College and University Law on "The First Amendment, Governmental Censorship, and Sponsored Research"

We are concerned that there may be an increase in federal agency efforts to place restrictions on the dissemination to the results of unclassified research. Please continue to inform us of any actions in this area.

Refer: Barbara Yoder 510-987-9848

Subject Index: 01, 11, 20

Organization Index: U-115, F-350

David F. Mears

Director

Research Administration Office

Enclosures (distributed to Contract and Grant Officers only)

cc:

Associate Vice President Moore

L. Clausen/ONR

Senior Vice President Kennedy

UNIVERSITY OF CALIFORNIA

Carol McClain, Coordinator

Research Issues

June 1, 1993

VICE CHANCELLORS FOR RESEARCH GRADUATE DIVISION DEANS

Dear Colleagues:

Enclosed for your reference and information is a brief statement of University policies and principles that are meant to serve as a guideline for faculty who are planning to respond to the solicitation for proposals of the Technology Reinvestment Project (TRP).

Please inform faculty at your campus who are developing industrial partnerships under the TRP of the importance of communicating these UC policies and principles early in their discussions with their industrial partners and of involving their Contracts and Grants Offices at the earliest possible stage in negotiations to assure timely initiation of their TRP projects.

If you have questions, please contact Barbara Yoder in Research Administration (510-987-9848) or Joe Acanfora in the Office of Technology Transfer (510-748-6618).

Sincerely,

Belle Cole

Special Assistant

cc:

Defense Conversion Working Group Director Wootten

Director Mears

Director Merritt

Manager Acanfora

Coordinator McClain

Principal Administrative Analyst Evans

Principal Administrative Analyst Yoder

DEFENSE CONVERSION BULLETIN

University Policy Issues in industrial Partnerships:

Foreign Graduate Students, Publications, and

Intellectual Property

The Technology Reinvestment Project (TRP) will provide new opportunities for University researchers to work with industry on projects. It is important, however, that in the partnerships being formed the University reaffirm its commitment to long-standing academic policies regarding ownership of results and access to University research programs.

Citizenship Restrictions. UC's past experience with some commercial firms working on dual-use technologies suggests that in some cases the companies feel compelled by Export Administration Regulations to control access and prohibit participation of foreign nationals. However, current University policy prohibits acceptance of awards in which limits are placed on the basis of citizenship of project participants.

Publication Delays. University policy requires that the University own or be able to control dissemination of the results of research. Open publication of results is essential to the research mission of the University. Only Chancellors have the authority to approve publication restrictions. However, we are unaware of any Chancellor having made a significant exception to the University's publication policy for other than classified research, even when such a stand has cost the University much needed research funding.

Intellectual Property. The University has a long-standing policy on rights in inventions and patents made by its employees. Patent provisions outside University policy may delay or preclude a faculty member's ability to publish; diminish a P.I.'s ability to secure future sponsored research funding; interfere with effective technology transfer; or violate certain legal obligations to the federal government. University patent policies provide for ownership by the University of inventions which arise under research conducted by University faculty and grant certain prescribed royalty-bearing licensing rights to the sponsors and collaborators of such University research. A portion of such royalties are returned to inventors, personally, and to the inventor's campus for further research. The University position, however, provides for flexibility and exceptions, as necessary, to accommodate any unique or special circumstances arising under the TRP.

Early discussions of these issues should include your campus Contracts and Grants Office, Patent Coordinator, or the Office of Technology Transfer. These offices are familiar with industry concerns and have forged agreements in which everyone can benefit.